Justia U.S. 1st Circuit Court of Appeals Opinion Summaries

Articles Posted in Trademark

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Defendant, Building #19, Inc., was an off-price retail store that acquired products and resold them at discounted prices in stores in New England. Defendant advertised in newspapers around New England, and the ads often featured descriptions of the advertised goods. Plaintiff, Swarovski Aktiengesellschaft and Swarovski North American Limited (collectively, Swarovski), was a manufacturer and distributor of crystal and jewelry. It held several registered trademarks for the mark "Swarovski." After Defendant obtained several Swarovski crystal figurines it hoped to resell, Defendant designed a newspaper advertisement printed in a large font with the name "Swarovski." Plaintiffs sought a preliminary injunction barring Defendant from using the Swarovski name or mark in its advertising. The district court granted the injunction in part by limiting Defendant's use of the Swarovski name to a smaller font size. Defendant appealed. The First Circuit Court of Appeals reversed, holding that the district court erred by failing to include necessary findings on whether (1) Swarovski was likely to succeed in its infringement claim against Defendant by establishing that the proposed advertisement was likely to confuse customers, and (2) Swarovski would suffer irreparable harm as a result of the ad. Remanded. View "Swarovski Aktiengesellschaft v. Building #19, Inc." on Justia Law

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The parties in this case were competing financial institutions operating in Puerto Rico. Plaintiffs (collectively, "Oriental") had for many years used the ORIENTAL mark in connection with advertising, promotion, and offering of financial services in Puerto Rico. Oriental contended that beginning around 2009, Defendant ("Cooperativa") used a confusingly similar mark, COOP ORIENTAL, and a confusingly similar logo containing that mark in connection with its financial business and services, in violation of the Lanham Act and Puerto Rico trademark law. Finding a likelihood of confusion, the district court ordered Cooperativa to cease all use of its new logo (which used the COOP ORIENTAL mark with an orange trade dress) but allowed Cooperativa to revert back to using its pre-2009 logo (also containing the COOP ORIENTAL mark, but with a different trade dress). On appeal, Oriental contended that the court's injunction should have been broader to include any use of the COOP ORIENTAL mark and similar marks. The First Circuit Court of Appeals remanded to the district court to determine whether there was a likelihood of confusion as to the COOP ORIENTAL mark and other marks and whether the injunction should be broader. View "Oriental Fin. Group, Inc. v. Cooperativa de Ahorro y Credito Oriental" on Justia Law

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HSN sold through its website and television station about 70,000 "Esteban" guitars that it identified, inaccurately, as containing Fishman pickups. Esteban is the performance name used by musician Paul who, with his company Daystar, has collaborated with HSN since 2001 to market Esteban guitar packages. Fishman, manufacturer of the pickup at issue, which is attached to musical instruments for sound amplification, claimed trademark infringement and false advertising under the Lanham Act, 15 U.S.C.1051, against HSN, Paul, and Daystar. The district court rejected the claims, finding that the violations were not "willful." The judge chose not to order disgorgement of profits. The First Circuit affirmed, rejecting challenges to evidentiary rulings and jury instructions. In federal civil litigation willfulness requires a conscious awareness of wrongdoing by the defendant or at least conduct deemed "objectively reckless" measured against standards of reasonable behavi View "Fishman Transducers, Inc. v. Paul" on Justia Law

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Peoples Federal, a community bank that operates exclusively in Eastern Massachusetts, was chartered in 1888 and became a federally insured savings and loan in 1937. It has used the term "Peoples" in its name and service marks since 1937 and claims to be the only continuous user of the mark for banking services in Eastern Massachusetts since that time. It owns six Massachusetts registrations for its marks. Defendant, People's United, was founded in 1842 in Connecticut, and has used the word "People" in its name for at least 80 years. After acquiring branches in Massachusetts, defendant re-opened them under the name "People's United Bank." Peoples Federal filed suit alleging trademark infringement, trademark dilution, and unfair competition under the Lanham Act, 15 U.S.C. 1125(a), and Massachusetts statutory and common law. The district court denied a preliminary injunction. The First Circuit affirmed, finding that the court properly weighed plaintiff's likelihood of success on the merits, likelihood of irreparable harm, the balance of relevant equities, and the effect of the court's action on the public interest.

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In 1995, plaintiff, a popular psychic and astrologer, and defendant entered into a contract for production and distribution of materials featuring plaintiff's psychic and astrological services. Plaintiff granted defendant the right to use his trademark, name, and likeness. After a 2006 dispute led to litigation; a jury rejected plaintiff's claim that he had validly terminated the agreement, found that he had violated the agreement, and found that defendant owed him no compensation. In 2009, both parties sought injunctive relief to prevent the other party from using the trademark. The district court entered a preliminary injunction in favor of defendant, finding that plaintiff had assigned the trademark in perpetuity. The First Circuit affirmed. The district court did not abuse its discretion in issuing a preliminary injunction, based on its interpretation of the agreement and application of collateral estoppel, based on the prior litigation.

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The parties agree that defendant has used the mark continuously since 1998, Plaintiff claims, and defendant disputes, use since 1989. The defendant applied for registration of the mark in 1998 and the USPTO issued registration in 2002. The plaintiff applied for registration in 2000. The USPTO initially denied, but in 2008 granted, registration. The defendant sent a cease-and-desist letter in 2000, but plaintiff continued to use the mark. The parties negotiated and, in 2005, entered an agreement under which defendant would advertise on plaintiff's website. The relationship broke down and, in 2008 defendant petitioned the USPTO to cancel plaintiff's registration; the petition is still pending. Plaintiff sought declaratory judgment and defendant counterclaimed. The district court entered a preliminary injunction in favor of defendant. The First Circuit vacated and remanded. The district court erred in presuming irreparable harm upon finding a likelihood of success on the merits, in a case where there has been an excessive delay in seeking relief.